6:21-cv-01178
Ortiz Associates Consulting LLC v. Ricoh Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ortiz & Associates Consulting, LLC (New Mexico)
- Defendant: Ricoh USA, Inc. (Delaware)
- Plaintiff’s Counsel: Ramey LLP
- Case Identification: Ortiz & Associates Consulting, LLC v. Ricoh USA, Inc., 6:21-cv-01178, W.D. Tex., 03/31/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s multi-function printers infringe a patent related to systems for securely brokering and rendering data from a wireless device to a networked device using a passcode.
- Technical Context: The technology addresses methods for enabling users of early-generation mobile wireless devices to locate and securely print documents on networked printers.
- Key Procedural History: The complaint is a First Amended Complaint. Plaintiff explicitly reserves the right to amend the complaint to add claims for indirect and willful infringement pending the outcome of fact discovery regarding Defendant's knowledge of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2000-06-27 | '285 Patent Priority Date |
| 2017-01-17 | '285 Patent Issue Date |
| 2022-03-31 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,549,285 - Systems, Methods and Apparatuses for Brokering Data Between Wireless Devices, Servers and Data Rendering Devices
- Issued: January 17, 2017
The Invention Explained
- Problem Addressed: At the time of the invention's priority date, users of handheld wireless devices faced significant challenges in utilizing data they retrieved, as solutions for rendering that data (e.g., printing) were "severely limited, or practically nonexistent" and users were "restricted in all data use by small device-based viewers" ('285 Patent, col. 4:35-48).
- The Patented Solution: The patent describes a system architecture to solve this problem by "brokering" data between a wireless device (WD) and a data rendering device (DRD), such as a networked printer ('285 Patent, Abstract). The system uses a server to manage the process, which can include the WD requesting the location of a nearby DRD, the server facilitating the transfer of data to that DRD, and the user entering a passcode at the DRD's user interface to securely authorize the final rendering of the document ('285 Patent, col. 5:28-44; Fig. 10).
- Technical Importance: The technology addressed an emerging need for mobile productivity by creating a bridge between portable data on wireless devices and physical output devices like printers, a significant challenge in the early 2000s ('285 Patent, col. 4:49-58).
Key Claims at a Glance
- The complaint asserts independent claim 1 and notes that one or more of claims 1-13 are infringed (Compl. ¶8).
- Independent Claim 1 of the ’285 Patent recites:
- A system for rendering data from a network at a wireless device's request.
- A "server" that is in communication with a "data rendering device" (DRD), where the DRD has a user interface for receiving passcodes and is registered with the server.
- "Memory in said server" for securely storing data and an associated passcode received from or on behalf of the wireless device (WD).
- The server is configured to receive the data and passcode from memory and render the data only after a passcode entered at the DRD's user interface matches the stored passcode.
- The complaint reserves the right to assert dependent claims (Compl. ¶8).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the "Ricoh: IM C2000/C2500/C3000/C3500/C4500/C5500/C6000 series" of multi-function printers (MFPs) (Compl. p. 4).
Functionality and Market Context
The complaint alleges these MFPs are systems for rendering data provided via a network at the request of a wireless device (Compl. p. 4). The accused functionality includes the ability to print files stored on a mobile device, store scanned data on a mobile device, and operate the MFP from a mobile device (Compl. p. 5). A specific feature highlighted is the ability to "Touch the NFC tag of the machine with a smart device to enter the password for printing a confidential document," a function available on machines with "RICOH Always Current Technology v1.2 or later" (Compl. p. 5). The complaint also references the ability to store a document on the MFP's hard disk for later printing from the control panel (Compl. p. 5). The complaint does not provide further detail on the products' market positioning.
IV. Analysis of Infringement Allegations
'285 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) - | Alleged Infringing Functionality - | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for rendering data provided via a data communications network at the request of a wireless device, comprising: | The Ricoh IM C2000-C6000 series is identified as "a system for rendering data provided via a data communications network at the request of a wireless device." A product image of the accused MFP is provided. (Compl. p. 4). - | ¶9, p. 4 | col. 13:28-32 |
| a server in communication with at least one data rendering device (DRD), said at least one DRD including a user interface for receiving passcodes, the DRD registered with said server to access and receive data over a data communications network at the request of a wireless device (WD) for rendering of the data at the at least one DRD in response to a passcode associated with said WD being entered at the user interface; | The complaint alleges the accused system meets this limitation, supported by a diagram showing a mobile device communicating with the MFP and a description of functions including password-protected printing initiated by a smart device. (Compl. p. 5). A diagram provided in the complaint depicts a mobile device communicating with a printer to print, scan, and store files. (Compl. p. 5). | ¶9, p. 5 | col. 13:33-40 |
| memory in said server accessible by said DRD, said memory for securely storing data received by or on behalf of said WD and said passcode associated with said WD; and | The complaint alleges this is met by the ability to "store a document on the hard disk of the machine and print it from the control panel later." (Compl. p. 5). Another screenshot from a user manual describes storing a document on the machine's hard disk for later printing. (Compl. p. 5). - | ¶9, p. 5 | col. 13:41-45 |
| wherein said server is configured to receive said data and said passcode associated with said WD from said memory and to render said data after at least one passcode is entered on said user interface that matches said passcode stored in said memory associated with said WD and provided to said DRD. | The complaint alleges the system is configured to render data after passcode entry, citing the same evidence of password-protected printing initiated via a smart device. (Compl. p. 6). - | ¶9, p. 6 | col. 13:46-54 |
Identified Points of Contention
- Scope Questions: A central issue may be whether the claimed "server" and "data rendering device (DRD)" must be architecturally distinct components. The claim recites "a server in communication with at least one data rendering device," which suggests two separate entities, whereas the complaint’s evidence appears to map both claimed components onto the single Ricoh MFP. This raises the question of whether the claims permit a single apparatus to embody both the "server" and the "DRD."
- Technical Questions: The complaint alleges the accused system contains a "server" but primarily points to the functionality of the MFP itself. An evidentiary question will be to identify the specific component in the accused system—whether software on the MFP or a remote cloud service—that performs the functions of the claimed "server," including how it is "registered" and how it securely stores and matches the data/passcode pair as required by the claim.
V. Key Claim Terms for Construction
The Term: "server"
Context and Importance: The definition of "server" is critical to the infringement analysis. The dispute may turn on whether a "server" can be a software component integrated within the DRD (the MFP) or if it must be a physically or logically separate network entity. Practitioners may focus on this term because the complaint's infringement theory appears to depend on a broad, functional definition.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's objective is to provide a system for "data brokering," which could support construing "server" as any component that manages requests, data, and access, regardless of its physical location or integration with other components ('285 Patent, Abstract).
- Evidence for a Narrower Interpretation: The language of Claim 1, "a server in communication with at least one data rendering device (DRD)," suggests two distinct entities. The specification's exemplary embodiment in Figure 1 depicts network servers (15) as separate from DRDs (7), and the detailed description discusses network infrastructure components like HLRs and MSCs as distinct from end-user devices ('285 Patent, col. 7:15-19, col. 8:45-49).
The Term: "passcode"
Context and Importance: The scope of this term is important because the complaint identifies an NFC-based interaction as a basis for infringement. The question is whether "passcode" is limited to a user-typed alphanumeric string or if it encompasses other authentication methods.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests an expansive definition, stating that "Passcode capabilities can include the use of passwords/passcodes, biometrics and/or communications security (COMSEC)" ('285 Patent, col. 5:42-44). This language may support an interpretation that includes a variety of authentication factors beyond a simple password.
- Evidence for a Narrower Interpretation: An argument could be made that the claim's requirement of a passcode being "entered at the user interface" implies a manual action by the user, such as typing a code, which might be argued to be distinct from a proximity-based authentication like an NFC tap.
VI. Other Allegations
- Indirect Infringement: The complaint does not currently allege indirect infringement but states, "Plaintiff reserves the right to amend to add claims for indirect infringement... to the extent fact discovery shows RICOH's pre-expiration knowledge of the patent" (Compl. ¶8, fn. 1).
- Willful Infringement: The complaint does not currently allege willful infringement but makes the same reservation as for indirect infringement, pending discovery of pre-suit knowledge (Compl. ¶8, fn. 1).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may depend on the answers to two central questions:
A core issue will be one of architectural scope: can the claimed "server" and "data rendering device (DRD)," which the claim language presents as being "in communication with" each other, be embodied within a single hardware unit as alleged in the complaint, or must they be demonstrably separate components as suggested by figures and descriptions in the patent?
A key evidentiary question will be one of functional mapping: assuming the MFP can embody the "server," what specific software or hardware components within the Ricoh system perform the claimed server functions of being "registered," securely storing the data/passcode pair, and subsequently matching a user-entered passcode to release the stored data for rendering?